Clerical Mistakes in Petition Can Be Fixed Under Certain Circumstances

Despite its mostly hard-line stance on compliance with the trial practice rules, the Board recently saved an administrative assistant who confused the filing of two petitions seeking inter partes review and jumbled several exhibits. The issue came to the fore in ABB Inc. v. Roy-G-Biv Corp. (IPR2013-00063) because Patent Owner sought to use the mistake as a way to require Patent Challenger to move forward with a defective petition. The Board did not agree, allowing correction of the petition pursuant to 37 CFR §104(c).

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR §104(c) – A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.[/pullquote]

The Order itself comes to a reasonable and predictable conclusion, but in the meantime tells the story of an unfortunate series of events that caused erroneous filings with the PTAB and, ultimately, required three separate declarations to fix.

What is worthwhile noting, for future reference, however, is that the rules take into account the occasional need for correction of certain clerical errors. To that end, the Board found that 37 CFR §104(c) “is remedial in nature and is therefore entitled to a liberal interpretation.” As such, the Board rejected Patent Owner’s arguments, finding that uploading of incorrect documents was, indeed, a clerical error, and Patent Owner would have sufficient time to provide its preliminary response, among other rejected arguments.

So the Board has a heart after all!  Parties cannot rely on a get out of jail card often, but the reasonableness of the Board’s stance in this case reflects well that minor, inconsequential errors will not lead to the wholesale destruction of a party’s case.

Grounds in Inter Partes Review Petitions Must Be Specific

The divergence of inter partes review practice and reexamination practice continues to show itself in the PTAB’s rulings. In a series of 8 inter partes review petitions filed by Oracle Corporation against patents owned by Clouding IP, LLC, the Board denied a number of proposed grounds for unpatentability, finding that they were not specific enough.

The Board found that the practice, that is sometimes undertaken in reexamination practice, of generically stating that other prior art combinations may also be used does not meet the requirements of IPR practice. More specifically, the Board found that the petition contained alleged grounds for unpatentability that extend beyond those “specifically identified and particularly discussed” in the petition. Further, the petition contained “unspecified combinations of prior art.”

The Board denied all grounds that were based on these generic allegations, noting that inter partes review was a trial, not reexamination or continued prosecution, and Patent Challenger bears the burden of proof.  As such, Patent Challenger was incorrect in referring to an alleged ground of unpatentabiltiy as a proposed rejection made by the Board.  Instead, it was incumbent on Patent Challenger to identify with particularity the challenged claim, grounds, and evidence, that were being used to meet Patent Challenger’s burden. In short, the requirements of 37 CFR §104 had not been met because vague and general allegations cannot meet the “reasonable likelihood” standard.

While the Board issued 8 separate Orders, because each Order had to specify which grounds from each IPR were being dismissed, the rationale was the same in each and, as such, we include only one exemplary Order HERE.

Ninth Inter Partes Review Trial Instituted

In the third of four inter partes review trials involving Intellectual Ventures and Xilinx, all instituted on February 12, 2013, the PTAB again has again instituted an inter partes review trial against a Xilinx patent, this time US Patent No. 8,058,897, in the IPR styled as Intellectual Ventures Management LLC v. Xilinx, Inc. (IPR 2012-00020).  As with the previous Orders (see, e.g., HERE), the Board in this IPR proceeding instituted the trial against all challenged claims, granting on four of the nine proposed grounds.

The subject matter of the ‘897 patent covers an integrated circuit that includes multiple dies, wherein a master die receives configuration data for both the master and a slave die.  The key limitations at issue in the Board’s ruling were the terms “integrated circuit” and “die,” with the Board holding that the ‘897 patent claims require a multi-die IC, where a die is a “single piece of silicon that contains one or more circuits and is or will be packaged as a unit” (relying on the “Authoritative Dictionary of IEEE Standard Terms” in coming to this conclusion).

In turning to the Board’s specific analysis of the proposed grounds of unpatentability, a few interesting points are revealed.  At threshold, Patent Owner chided the petition for failing to present prior art that teaches all of the claim elements, including a multi-die IC and, therefore, that the “proposed obviousness rejection” is incomplete.  The Board rejected this argument, finding that IPR proceedings are different than reexamination or continued prosecution in that no “proposed obviousness rejection” is to be made by the Board.  Regardless of how the counter-argument was phrased (it may have been better for Patent Owner to frame its argument that a prima facie case of obviousness had not been advanced), it is eye-opening that the Board accepted a 103 argument where each of the limitations were not found in the proposed combination of prior art.

To come to that obviousness conclusion, the Board remarked that Xilinx did not take into account the level of ordinary skill in the art.  The Board went on to articulate the appropriate level of ordinary skill in the art for this matter, and then went on to find that developing a multi-die IC would have been a matter of routine implementation given that level of ordinary skill.  As such, even though Patent Challenger advanced art that lacked this key limitation of the claims, citing the KSR decision, the Board found that “it would have been within the knowledge and skill set of a person of ordinary skill in the art” to arrange the dies on the same IC, creating a multi-die IC.  Order at 11.

It is also worth noting that the Board rejected, in its discussion relating to Ground 4 (Order at 14-15), the argument by Patent Owner that the Petition was defective for not providing a statement of the precise relief requested.  In a manner that rings of a motion for more definite statement before a district court, Patent Owner had argued that Ground 4 did not specifically articulate the relief requested.  The Board did not accept this argument, finding that Patent Challenger “has substantively provided an underlying explanation of how [the prior art] applied to claims 12-14.”  While the titles used by Patent Challenger may not have been representative of the precise nature it sought, the Board found that to deny Ground 4 based on the titles used would exalt form over substance.  In short, this portion of the decision is interesting because, for one of the very few times, the Board seems to giving some leeway as compared to a strict reading of the Trial Practice Rules.

In the end, the Board instituted the IPR based upon Grounds 1, 2, 4, and 9.  The Board denied Grounds 3 and 5-8, finding that they were cumulative in view of the other grounds that were granted.

At the risk of becoming repetitive, it is worth noting again that the Board did not rely upon the mere recital of “broadest reasonable interpretation,” but rather articulated a specific claim construction for the disputed terms.  Consciously or not, the Board is moving the battlefield for many inter partes reviews to claim construction.  While parties to IPR proceedings must take note of this strong trend, there are certainly risks (especially to patent owners) to articulating claim construction positions in these proceedings and this should be carefully considered when making claim construction arguments.

What is a Real Party In Interest in Inter Partes Review?

iStock_000015955172XSmallOne of the largest downsides of inter partes review for a patent challenger is, of course, the estoppel that arises upon a final written decision. That estoppel works to prevent the real party-in-interest from raising validity challenges to the patent-at-issue that were raised in the IPR, or reasonably could have been raised.  Importantly, however, that estoppel only applies to a real party-in-interest.  As such, the determination of what entities are, or are not, real parties-in-interest is sure to be subject of many future disputes.

The issue of what is a real party-in-interest arose in an Order issued in the quartet of related inter partes review proceedings styled as Intellectual Ventures Management v. Xilinx, Inc. (IPR2012-00018, -00019, -00020, and -00023).  In those cases, the patent owner, Xilinx, filed a preliminary response, arguing that IVM’s petitions should be denied or dismissed because each failed to identify ALL real parties-in-interest.  The Board denied this line of argument, finding that Xilinx had failed to establish that the real party-in-interest was incorrectly identified.

The basis for Xilinx’s argument was a certificate of interested entities that was filed pursuant to the Local Rules of the Northern District of California in related litigation.  In that filing, 63 entities were identified as having a financial interest in the controversy or who could be substantially affected by the outcome of the proceeding.  Based on this filing, Xilinx argued, IVM improperly only identified itself in the present set of inter partes reviews as the real party-in-interest.

The Board was not persuaded, however, finding that Xilinx had not sufficiently shown the relevance of the district court certificate vis-à-vis the facts of this case.  For example, Xilinx did not show how the requirements of the Northern District of California are the same, or similar, to the requirements outlined in the Trial Practice Guide regarding what a real party-in-interest is for inter partes review purposes.  77 Fed. Reg. 157 (August 14, 2012) 48759-60. The Board went on to provide guidance to future patent owners seeking to make the same argument, instructing that a patent owner must come forward with sufficient evidence to demonstrate that the real party-in-interest disclosure from a petition is inadequate – using the Trial Practice Guide as a guideline for that evidence.

A full discussion of the real party-in-interest guidelines can be found in the Trial Practice Rules at 48759-60.  While Xilinx’s argument only referenced the federal court certificate, more fact patterns will be required to enable IPR participants to understand how these guidelines will be implemented.  Indeed, the Trial Practice Guide points out that these will be fact-intensive inquiries:

“[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a ‘real party-in-interest’ or ‘privy’ to that proceeding is a highly fact-dependent question….Such questions will be handled by the Office on a case-by-case basis taking into consideration how courts have viewed the terms ‘real party-in-interest’ and ‘privy.’”

Stay tuned for future development of this high stakes question of who is a real party-in-interest.

What is in your Inter Partes Review Claim Chart?

The claim chart has been a fixture of Patent Office post-grant practice, let alone federal court litigation, and inter partes review should be no different.  As has become a theme in inter partes practice, however, strict adherence to the Patent Office regulations is paramount in these proceedings, and the venerable claim chart has not avoided the glare of the Board.

In the case of Xilinx, Inc. v. Intellectual Ventures I, LLC (IPR2013-00112), the Board convened a conference call to discuss defects in the petition filed by Xilinx.  In the end, the Board accepted the petition, but made clear that the petition was flawed because it contained defective claim charts.  Specifically, the Board slapped Xilinx’s wrist because the claim charts contained analysis that went beyond the process of identifying key features of a claim and comparing those features with specific evidence.

The Board’s position is interesting because it is unclear where the Board derived the basis for its strict objection to the claim charts.  The Trial Practice Rules (at 48764) state that claim charts are not required, but that they may be filed to “explain clearly and succinctly what the petitioner believes a claim means in comparison to something else, such as another claim, a reference or a specification.”  The Rules go on to explain that such charts may streamline the process of identifying key features of a claim and comparing those features with specific evidence.  Of course, this latter language is what was cited by the Board in its conference call and subsequent Order, but there is nothing in the rule that would seem to prohibit including analysis in the claim chart.  There also is little to help us discern what types of “analysis” were troublesome to the Board.

Our best guess is that the Board is concerned about the page limitations that are imposed on petitions.  The inter partes rules state that a claim chart may be single-spaced, despite the requirement that a petition must otherwise be double-spaced.  If a petitioner were to include a significant amount of analysis and argument in the claim chart, instead of a succinct comparison of claim language versus specific evidence, this would help a petitioner to avoid the strictures of the page limitation.

Third Inter Partes Review Trial Offers Clarification on Several Key Issues

As with any new creature in the law, inter partes review proceedings, created in the America Invents Act, will require time and interpretation before their nuances will be understood.  Virtually every new order issued by the Patent Trial and Appeals Board has provided at least some level of context for the new IPR rules, and the third ever decision instituting an inter partes review is no different.  In Macauto USA v. BOS Gmbh & KG, IPR2012-00004, the PTAB decided on January 24, 2013 to institute an inter partes review trial on most, but not all, of the claims challenged by the petitioner therein.  Most interesting about the decision, however, is the interpretation provided regarding two key issues in the IPR rules; namely clarification of: 1) the statutory bar from 35 USC §315(b); and 2) the effect of a prior proceeding (here a reexamination of the patent-in-suit), on the institution of an inter partes review, pursuant to 35 USC §325(d).

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 USC §315(b) — “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” [/pullquote]

Statutory Bar

The patent owner in this case asserted that the patent challenger was statutorily barred from filing the IPR petition in light of a previous lawsuit between the parties.  On April 7, 2011, the patent owner filed complaint in federal district court, alleging infringement of the patent-in-suit by petitioner’s Taiwanese parent company.  The complaint was delivered to that Taiwanese company on or about May 13, 2011.  The lawsuit case was later dismissed, without prejudice, pursuant to a stipulation between the parties.

35 USC §315(b) states that a patent challenger has only one year from the date a patent infringement complaint has been served on it to file a petition seeking inter partes review regarding that patent.  Because the petitioner’s parent company was served with an infringement complaint more than one year prior to the filing of the petition for inter partes review, the patent owner argued, this IPR proceeding was statutorily barred.

The Board disagreed that the patent owner demonstrated that the statutory bar was applicable.  First, the Board looked to Federal Circuit precedence that interpreted dismissals without prejudice, and found that such dismissals were treated as returning the parties to a position as though the action had never been brought.  The dismissal of the case with prejudice against the parent corporation, therefore, nullified the effect of the alleged service of the complaint on the petitioner.  Further, while the parent corporation apparently signed and returned a waiver of service, that waiver of service was apparently never filed.  Thus, the patent owner’s failure to demonstrate that a waiver of service was filed was a second, independent reason to not institute the statutory bar.

Effect of Prior Proceeding

The America Invents Act was seemingly enacted with a built-in bias against re-litigating issues that have already been considered by the Office.  Specifically, 35 USC §325(d) states that the Director may reject a petition if the same or substantially the same prior art or arguments were previously considered.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 USC §325(d) – “…the Director may…reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[/pullquote]

Prior to the petition for inter partes review filed in this case, the patent-in-suit was the subject of a request for ex parte reexamination (brought by the same petitioner).  While the request was granted, ultimately all 21 claims of the patent were confirmed as patentable by the Office.  In its Order granting inter partes review, the Board took issue with several determinations by the Examiner in the reexamination — to a large extent second-guessing the previous determinations by the Office.  For example, the Board stated that it “reviewed the declarations [submitted in the reexamination proceeding] and agree[d] with Petitioner that they should not have been given determinative weight by the Examiner.”  Specifically, the Board provided several reasons why it disagreed with the analysis provided by the patent owner’s expert witnesses in the reexamination.  In what will certainly be fodder for future commentary, the Board admitted in its Order that the petitioner did not provide any declarations of its own to refute the declarations provided by the patent owner in the underlying reexamination.  Thus, the Board has disagreed with the analysis and conclusions of the patent owner’s experts on its own, without any countervailing evidence having been provided by the petitioner.

In the end, the Board noted that it is not required by statute to reject the petition just because it was based on facts and arguments previously presented, and it chooses not to do so here, given its disagreement with the patent owner’s experts.

*****

With each passing PTAB Order, more granulation and clarity is brought to inter partes review practice.  In the end, the success or failure of these proceedings to function as an effective and efficient alternative to federal court litigation is going to largely be based upon how comfortable the proceedings are to patent challengers.  The PTAB’s decision to initiate an IPR in the Macauto case has aspects that are certainly favorable to patent challengers – the estoppel of §315(b) has been interpreted in a narrow sense and the option to not re-litigate issues previously before the office, set forth in §325(d), was not exercised.  In addition, the Board challenged the findings and conclusions of a patent owner’s expert witnesses, even in the absence of any argument or expert testimony from the patent challenger.  It is still early, but signs point to inter partes review proceedings being a favorable forum for patent challengers.

New Inter Partes Review Fee Structure In Effect

 

The new inter partes review proceeding may have just gotten even more attractive to potential patent challengers in light of a revised fee structure implemented by the Patent Office, effective January 18, 2013.  In general, the Patent Office has lessened the risk of filing an inter partes review by breaking the costs associated with such a filing into two discrete segments – one fee for filing, and another fee to be paid only if an inter partes review trial is instituted.

More specifically, under the original rules, the Patent Office fee to file a petition seeking inter partes review was $27,200 for up to 20 claims (with a $250 per claim fee for each claim in excess of 20 claims).  That fee was due upon filing of the petition and no refund is provided if the inter partes review proceeding was not ultimately instituted.

The fees charged by the Patent Office were originally calculated with an eye toward covering the actual costs the Office anticipated incurring in handling an inter partes review – both in terms of administrative costs, as well as the time the Administrative Patent Judges would have to spend on each filing. To better align the costs to be incurred with inter partes review practice, however, the Office apparently recognized that there will be instances in which petitions are not granted, lessening the anticipated burden on the Office.  That cost savings will now be passed along to the patent challenger.

Under the new rules, when a petition seeking inter partes review is filed, the cost is broken up into two parts:

  • Filing Fee: $9,000 for up to 20 claims ($200 per claim for each claim in excess of 20)
  • Institution Fee: $14,000 for up to 15 claims ($400 per claim for each claim in excess of 15 claims made part of the inter partes review trial)

This change will, if anything, further incentivize use of the IPR process because the risk has been lessened for patent challengers.  They only risk a $9,000 filing fee with their petition, instead of the full $27,200 fee required under the old rules.  This continues a trend – making these proceedings as easily accessible as possible to provide an effective, inexpensive option to district court litigation for patent challengers.

 

Multiple Back-Up Counsel Allowed in Inter Partes Review

Despite the wording of 37 CFR § 42.10, as well as the accompanying comments thereto, that seem to limit parties to a single back-up counsel, the PTAB has recently granted concurrent pro hac vice motions that allow a patent owner to have two back-up counsel participate in a single Inter Partes Review proceeding.  It remains to be seen whether the PTAB will or will not place a restriction on the number of back-up counsel that are able to participate in an IPR.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR § 42.10(a) – “If a party is represented by counsel, the party must designate a lead counsel and a back-up counsel who can conduct business on behalf of the lead counsel.”[/pullquote]

More specifically, the express wording of § 42.10 seems to suggest that only a single lead counsel and single back-up counsel is allowed in any Inter Partes Review proceeding.  Further, the comments accompanying the rule only reinforce this limitation.  To that end, one of the comments to the proposed Trial Practice Rules contained a proposal for multiple back-up counsel.  In response, the Patent Office stated only one lead and one back-up counsel would be required in any proceeding:

The comment suggesting multiple back-up counsel is not adopted.  Based on the experience of the Office in contested cases, designating one lead counsel and one back-up counsel by each party should result in more efficient and effective case management.  “Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial review of Patent Trial and Appeal Board Decisions; Final Rule,”  77 Federal Register 157 (14 August 2012), p. 48630.

The imposition of such a limitation could be, in some circumstances, unduly burdensome to parties in an Inter Partes Review proceeding.  Given the schedules of busy attorneys, as well as the potential in Inter Partes Review and Post Grant Review proceedings of multiple depositions within an abbreviated 3 month discovery period, having the ability to designate more than one back-up counsel could be advantageous and reasonable.

Despite the limitation in § 42.10 and the accompanying comments to a single back-up counsel, however, the PTAB recently granted two motions for pro hac vice admission in the ongoing IPR styled as Nissan N. Am., Inc. v. Carl B. Collins and Farzin Davanloo (IPR2012-00035). In that case, therefore, the PTAB tacitly over-ruled § 42.10 by allowing two separate back-up counsel.  The Board’s Order speaks of the patent challenger having “shown good cause why [counsel] should be recognized pro hac vice for purposes of this proceeding,” but the Order does not discuss whether good cause was shown to admit two separate back-up counsel.  Indeed, the issue was avoided entirely by virtue of the fact that the grant of the motions for pro hac vice admission were made in two separate Orders.

It is also interesting to view this order in light of a Notice of Defective Petition entered in Midland Radio Corp. v. Anthony Mirabelli (IPR2013-00021) wherein the PTAB stated that the Midland Radio Petition was defective because it listed as back-up counsel “all counsel” associated with a particular PTO customer number.  The PTAB instructed that “Per 37 CFR § 42.10(a), ‘the party must designate . . . a back-up counsel who can conduct business on behalf of the lead counsel.’” (emphasis in original).  Thus, to receive a filing date for its petition, Midland Radio filed an amended petition that listed only a single back-up counsel.

In the end, time will tell whether two or more back-up counsel will be allowed on regular basis, or whether the Board will continue with its early practice in other contexts of sticking to the letter of the Trial Practice Rules.

PTAB Expunges Papers in Inter Party Review Because No Permission Requested

If there is an early lesson to learn regarding protocols to be followed in Inter Partes Review proceedings, it is to make sure you have permission for anything you do before the PTAB.  There are a select few actions that do not require permission, because they are allowable by rule (filing of mandatory notices, patent owner statements, etc.), but for everything else – permission to file must be granted.

This cautionary tale played out in IPR2012-00006 (Illumina, Inc. v. Trustees of Columbia University), and related cases, in which the patent challenger, Illumina, Inc. filed a motion for leave to waive the page limit in the filing of its petition.  The patent owner, Trustees of Columbia University, filed an opposition to that motion, arguing that no good cause had been shown for the filing of an over-length petition.  While the story turned out just fine for the Trustees (the motion to waive the page limit was denied), the preparation of the opposition was wasted because the Board expunged the opposition from the proceeding given that no permission was requested (and granted) to file such an opposition.  This expunging is authorized by the Trial Practice Rules, specifically 37 CFR 47.7(a): “The Board may expunge any paper directed to a proceeding or filed while an application or patent is under the jurisdiction of the Board that is not authorized under this part or in a Board order or that is filed contrary to a Board order.”

The Board is sending an early message in Inter Partes Review proceedings – these proceedings will be closely controlled by the PTAB and very little, if any, leeway is going to be granted from the strict requirements of the Trial Practice Rules.

Inter Partes Review Battle Erupts Between Corning and Royal DSM

And just like that, the number of inter partes reviews filed since the inception of the proceedings (exactly 2 months ago), took a big jump with the filing of eight IPR petitions by Corning against patents owned by Netherlands-based Royal DSM NV.  The filings, from November 15 and 16, are interesting given that none of the patents has ever been involved in patent litigation, with Corning or otherwise.  Further, the patents appear to cover coatings that are already sold by DSM to Corning for the production of coated fiber optics.  To that end, in April 2011, DSM and Corning announced the extension of a 30-year relationship in between the companies related to the sale of such coatings. Thus, it remains to be seen what has caused Corning to go on the attack after such a long term business relationship with DSM.

Given the high cost of inter partes review, and the attendant estoppel provisions, it has been anticipated that these Patent Office proceedings will only be used in the event of pending, threatened, or expected litigation.  If these suppositions are correct, we should keep an eye on the district court litigation dockets for DSM’s patent infringement lawsuits against Corning, marking the next battle in this new high-tech war.